Mark protection
The owner of an older trademark can take action against a younger trademark if there is a likelihood of confusion. This is the case, inter alia, if the later mark is identical or similar to the earlier mark, relates to identical or similar goods or services, thereby creating a likelihood of confusion on the part of the public.
Action is also possible if the disputed mark takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the earlier mark.
Trademark infringement?
It is claimed that the registration for 'SUPERMAX' as a trademark is visually, aurally and conceptually similar to the trademarks already held by Max Verstappen (through his company) and to the 'well known trademark' MAX VERSTAPPEN. The element MAX would be the distinctive element on which the emphasis is placed. The MAX element would obviously refer to Max Verstappen, it is argued.
Also, the trademark 'S SUPERMAX' would take unfair advantage of or be detrimental to the reputation and/or distinctive character of the trademarks of Max Verstappen (his company) because the contested trademark would sail in the wake of his well-known trademarks. There would be abuse of the cashable reputation of MAX and MAX VERSTAPPEN and unfair advantage taken of that reputation.
Confusion risk?
The Bureau for Intellectual Property before which this case is pending, ruled as follows:
'The trademark invoked consists of the name Max Verstappen. In principle, a name has no specific meaning. This is only different when the name in question has become a conceptual symbol, for example due to the fame of the character bearing that name, or when the name in question has a clear and immediately recognizable semantic content. Now that Max Verstappen is a world-famous racing driver, it is immediately obvious to the public that the invoked trademark refers to this racing driver.
In the disputed trademark, the word element SUPERMAX will be understood by the public as a combination of the words 'super' and 'max'. Here, the word 'max' can be understood as an abbreviation of 'maximum' or 'maximum'. The words 'super' and 'max' can be construed as commendatory capacity and therefore the distinctiveness of these words is limited. Some of the public may also perceive the word MAX as a boy's name. However, the combination 'supermax' has no clear meaning.'
The Office is however not convinced, without further substantiation, that the public will perceive MAX in the disputed trademark as a reference to Max Verstappen.
In the opinion of the Office, the public in this case will also attribute greater distinctiveness to the not very common surname VERSTAPPEN than to the very common given name MAX. Also, the Office considers that in the disputed mark S SUPERMAX the element MAX is not dominant, as it concerns the last part of the mark, and is even weakly distinctive (also because the disputed mark also contains striking figurative element S at the beginning). Visually and aurally, there is only a slight degree of similarity.
For the goods in question, it is held that they are (largely) identical, namely mostly goods used for merchandising, flags and clothing.
Max Verstappen confessed?
The Office further held that '[h]ow though the person Max Verstappen is very well known as a racing driver, which is confirmed by the evidence submitted, in the opinion of the Office it has not [been] shown that MAX or MAX VERSTAPPEN is a well known trademark for the goods registered under these trademarks such as clothing e.d.'
Given the foregoing factors, the Office is of the opinion that the relevant public will pay more attention to the differences between the signs, than to the similarities so that there will be no likelihood of confusion.
Taking unfair advantage?
The contention that MAX VERSTAPPEN is a well known mark also fails. The Office rules, based on the submissions, that it can only be established that Max Verstappen is a well-known person. That MAX VERSTAPPEN is also a well-known trademark (for clothing etc.), has not been proven in the opinion of the Office.
The claim that there would be an attempt to hitch a ride on the success and the cashable reputation of Max Verstappen cannot be addressed in these proceedings, according to the Bureau, but may possibly be addressed in proceedings before the court.
The claim of Max Verstappen (his company) is therefore dismissed in this case
GO TO THE MAX?
In another similar a brand dispute, about GO TO THE MAX, the multiple Formula One world champion did not win either, incidentally. In that, similar reasoning was followed by the Office, which additionally ruled that GO TO THE MAX could be understood by at least part of the public as referring to "maximum" or "maximum. Also, GO TO THE MAX is a well-known expression/slogan, in which MAX has no independent and distinctive place.
Conclusion
.These trademark disputes show that similarity of only one trademark element is not necessarily sufficient to assume a trademark right likelihood of confusion, as one must always look globally at the assessment of the allegedly conflicting trademarks.
Also, it is not assumed in these trademark cases that because Max Verstappen is a well-known person, MAX VERSTAPPEN as a trademark is (therefore) also well-known.
